The AIA sets a one-year deadline to file a petition for IPR of a patent from the date a complaint for patent infringement is served.  35 U.S.C. § 315(b).  There is an exception: the bar does not apply when joining a second petition filed after the deadline to a pending proceeding filed before the deadline.  35 U.S.C. § 315(c).

In April 2012, ContentGuard served ZTE with a complaint for patent infringement.  In February 2013, ZTE petitioned for IPR of 38 claims of the asserted patent.  In June 2013, the Board granted the petition as to 20 of the claims.  On July 19, 2013, after the one-year statutory deadline had passed, ZTE filed a second petition for IPR of the 18 remaining claims and a motion for joinder with the first proceeding.  Five days later, ContentGuard filed a request for adverse judgment in the first proceeding.  In August 2013, the Board granted ContentGuard’s request.  The Board took up the second petition in September 2013, after the Board had entered judgment against ContentGuard and terminated the first proceeding.

It is not surprising that the Board denied the second petition.  What is surprising is why.  Because the first proceeding had already terminated, instituting a second proceeding would seemingly violate the statutory one-year bar.  The Board likely could have denied the second petition for that reason alone.  Instead, the Board treated the denial as an equitable exercise of discretion under 35 U.S.C. § 325(d).  The timing and unsuccessful joinder of the second petition strongly factored into the Board’s decision to deny the petition.  The Board commented: “The Board is concerned about encouraging, unnecessarily, the filing of petitions which are partially inadequate. A decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same Petitioner who filed an unsuccessful joinder motion, and is outside of the one-year statutory period, for filing a second petition to challenge the claims which it unsuccessfully challenged in the first petition.”  The merits of the second petition also factored into the Board’s decision, as the Board believed the second petition largely rehashed prior art and arguments rejected in the first petition.

This case suggests that, under “extraordinary circumstances,” the Board may equitably grant a second petition filed more than one year after service of a complaint with an unsuccessful motion for joinder.  Nevertheless, to succeed on such a petition, the petitioner must have compelling reasons for the delayed filing, and the art and arguments should be very different from the art in the earlier proceeding.

Before Lee, Kim, Zecher, Administrative Patent Judges

Informative Opinion: ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 (P.T.A.B. Sept. 25, 2013)